DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
2. Applicant filed amendment on 07/24/2025. Claims 1-3 and 8-10 are pending. Claims 1-3 and 8-10 are amended. Claims 1-3 and 8-10 are rejected. After careful consideration of applicant arguments, the examiner finds them to be not persuasive.
Rejection under 35 USC § 101
3. Applicant’s arguments toward 35 U.S.C. § 101 rejection are not persuasive. Amended independent claims 1 and 8 do not have additional elements that could lead to an improvement in the functioning of a computer, or an improvement to other technology or technical field.
4. Applicant is of the opinion that the claimed invention which includes a “decentralized function module” presents a technical solution differentiated from the existing system and describes features of the “decentralized function module” such as having “a unique configuration that specifies the claim itself and limits the claims to useful applications” and concludes that “the performance of the transaction creation/providing process of the participant node in the blockchain technology can be greatly improved”.
Examiner respectfully disagrees.
Mentioned above claim features performed by using the computer components. The use of a processor/computer as a tool to implement the abstract idea does not integrate the abstract idea into a practical application because it requires no more than a computer performing functions that correspond to acts required to carry out the abstract idea. The additional elements do not involve improvements to the functioning of a computer, or to any other technology or technical field (MPEP 2106.05(a)). Applicant’s argument that the decentralized function module” being not well-known is not persuasive because the limitation “decentralized function module” has been claimed in a result-oriented manner and lacks details as to how this module accomplishes decentralized function which therefore recites no more than “apply it.” See MPEP 2106.05(f) Mere Instructions To Apply An Exception [R-10.2019] (1).
Claims as a whole directed to providing transactions related to functions of management and payment (i.e., provide the participant transaction to a blockchain front end … wherein the participant transaction is a transaction related to at least one function of a blockchain wallet, management, and payment) which is grouped under “Certain methods of organizing human activity - commercial interactions”. Claim 1 does not purport to improve the functioning of a computer. Nor do they effect an improvement in any other technology or technical field. Accordingly, the additional elements do not impose any meaningful limits on practicing the abstract idea, and the claim is directed to an abstract idea.
5. Therefore, the claims are not patent eligible.
Rejection under 35 USC § 112(a)
6. Applicant is of the opinion that amendments to claims 1 and 8 will overcome all rejections under “Lack of algorithm”.
Examiner respectfully disagrees. Amendments to claim 8 does not address to rejections, therefore, rejections of claims 8-10 are sustained.
Rejection under 35 USC § 112(b)
7. Applicant is of the opinion that amendments to claims 1 and 8 will overcome rejections under “Lack of antecedent basis” and “Unclear scope”.
Examiner respectfully disagrees. Amendments to claim 1 does not address to rejections “Unclear scope”, therefore rejections of claims 1-3 are sustained.
Rejection under 35 USC § 102
8. Applicant is of the opinion that prior art Malik et al. does not disclose the “decentralized function module” and continues that “each the independent claims executes the ‘operation of providing participant transactions at the front end of the blockchain’ using the ‘decentralization function module’”.
Examiner respectfully disagrees.
Malik et al. teaches “a decentralization function module” (para 17 - “…an application program that is executed by a computing device possessed by the user 104…”) and “provide the participant transaction to a blockchain front end …by the decentralization function module” ( para 23 – “… the user 104 may request that the processing server 102 set up a smart contract to retain possession of the cryptographic currency… The user 104 may, using the first computing device 106, transmit a propagation request to the processing server 102 using a suitable communication network and method, such as via a web page, application program executed by the first computing device 106…”, para 24 – “The processing server 102 may receive the propagation request and may generate a smart contract based thereon. The smart contract may be an executable script that is added to the blockchain by a node in the blockchain network 110 that is configured to self-execute after a predetermined period of time…”, para 39 – “…In step 306, the transmitting device 224 of the processing server 102 may electronically transmit the smart contract to a node in the blockchain network 110 for confirmation and addition to the blockchain…”).
Claim Interpretation
Functional language
9. Claim 1 recites “at least one processor operably connected to at least one of the transceiver and the memory, and configured to: participate…; create…; and provide…”.
Claim 3 recites “wherein the at least one processor is further configured to … access…, create…, manage…, generate…, and check…”.
According to the Specification (PGPub, para 281), the processor is not special in anyway. Therefore, prior art that teaches a processor of a computer is sufficient, MPEP 2114 I-III. The functional claiming occurs "when the inventor is painstaking when he recites what has already been seen, and then uses conveniently functional language at the exact point of novelty"), MPEP 2173.05(g).
Not Positively Recited
10. The following underlined limitations are not positively recited and are generally not given patentable weight.
Claim 9 recites “wherein the participant transactions are created …”.
Claim Rejections - 35 USC §101
11. 35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
12. Claims 1-3 and 8-10 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
13. In the instant case, claims 1 and 8 are directed to an “apparatus and method for operating a participant node participating in a decentralized network”.
14. Claim 8 recites “providing transactions related to functions of management and payment”. Specifically, claim 8 recites “… to participate in … services using … resources; creating participant transactions; and providing the participant transactions …, wherein the participant transactions are transactions related to at least one function of a … management, and payment, wherein the … resources are at least one of a … resource …”. Subject matter grouped under “Certain methods of organizing human activity” (e.g., commercial or legal interactions) and an abstract idea in prong one of step 2A (MPEP 2106.04(a)).
15. This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A (MPEP 2106.04 II), the additional elements of the claim 8 such as “a participant node”, “a decentralized network”, “enabling the participant node to participate in network services”, “network resources”, “blockchain front ends”, “a blockchain system”, “a decentralization function module”, “a blockchain wallet”, “a network resource”, “a communication operator”, “a shared network resource” and “a decentralized network” represent the use of a computer as a tool to perform an abstract idea and/or does no more than generally link the abstract idea to a particular field of use. With respect to “enabling the participant node to participate in network services”, the claim lacks details regarding what “enabling the participant node” comprises. Therefore, as Applicant has neither placed a restriction on how “enabling” is performed nor described how the functions is accomplished, the limitations do not integrate the abstract idea into a practical application and does not improve the functioning of a computer, or to another technology or technical field, as it is no more than “apply it” (MPEP 2106.05(f)(1)).
16. When analyzed under step 2B (MPEP 2106.04 II), as the additional elements do no more than represent the use of a computer, or computer technology, as a tool to perform providing transactions related to functions of management and payment and/or generally link the abstract idea to a particular technological environment or field of use, they do not improve computer functionality or provide an improvement to another technology or technological field.
17. Hence, claim 8 is not patent eligible.
18. Dependent claim 9 further describes the abstract idea of providing transactions related to functions of management and payment as recites “wherein the participant transactions are created …”. The additional element such as “the decentralization function module” represents the use of a computer as a tool to perform an abstract idea and does no more than generally link the abstract idea to a particular field of use. And, therefore, does not improve the functioning of a computer, or to any other technology or technical field.
Dependent claim 10 further describes the abstract idea of providing transactions related to functions of management and payment as recites “further comprising …: accessing …, creating … accounts, managing created accounts, generating … transactions, and checking … status.…”. The additional elements such as “the blockchain wallet of the decentralization function module”, “the blockchain system”, “blockchain”, and “node” represent the use of a computer as a tool to perform the abstract idea and do no more than generally link the abstract idea to a particular field of use. And, therefore, does not improve the functioning of a computer, or to any other technology or technical field.
19. Claim 1 also recites “providing transactions related to functions of a management and payment”. Subject matter grouped under “Certain methods of organizing human activity” (e.g., commercial or legal interactions) and an abstract idea in prong one of step 2A (MPEP 2106.04(a)).
20. As in the case of claim 8, the judicial exception is not integrated into a practical application because when analyzed under prong two of step 2A (MPEP 2106.04 II), the additional elements of the claim 1 such as “a participant node”, “a decentralized network”, “a transceiver”, “a memory”, “a decentralization function module”, “at least one processor”, “network services”, “network resources”, “a blockchain front end”, “the blockchain system”, “a blockchain wallet”, “a network resource”, “a communication operator”, “a shared network resource”, and “a decentralized network” represent the use of a computer as a tool to perform an abstract idea and/or does no more than generally link the abstract idea to a particular field of use. Therefore, the additional elements do not integrate the abstract idea into a practical application as they do no more than represent a computer performing functions that correspond to (i.e., automate) the acts of providing transactions related to functions of management and payment.
21. When analyzed under step 2B (MPEP 2106.04 II), as the additional elements do no more than represent the use of a computer, or computer technology, as a tool to perform providing transactions related to functions of management and payment and/or generally link the abstract idea to a particular technological environment or field of use, they do not improve computer functionality or provide an improvement to another technology or technological field.
22. Hence, claim 1 is not patent eligible.
23. Dependent claim 2 further describes the abstract idea of providing transactions related to functions of management and payment as recites “wherein the participant transaction is created …”. The additional element such as “the decentralization function module” represents the use of a computer as a tool to perform an abstract idea and does no more than generally link the abstract idea to a particular field of use. And, therefore, does not improve the functioning of a computer, or to any other technology or technical field.
Dependent claim 3 further describes the abstract idea of providing transactions related to functions of management and payment as recites “wherein … is further configured to…: access …, create … accounts, manage created accounts, generate … transactions, and check … status …”. The additional elements such as “the at least one processor”, “the blockchain wallet of the decentralization function module”, “the blockchain system”, and “node” represent the use of a computer as a tool to perform an abstract idea and do no more than generally link the abstract idea to a particular field of use. And, therefore, do not improve the functioning of a computer, or to any other technology or technical field.
Conclusion
24. The claims as a whole do not amount to significantly more than the abstract idea itself. This is because the claims do not effect an improvement to another technology or technical field; the claims do not amount to an improvement to the functioning of a computer system itself; and the claims do not move beyond a general link of the use of an abstract idea to a particular technological environment.
25. Accordingly, there are no meaningful limitations in the claims that transform the judicial exception into a patent eligible application such that the claims amount to significantly more than the judicial exception itself.
Claim Rejections - 35 USC § 112
26. The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
27. Claims 8-10 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Lack of Algorithm
28. Claim 8 recites “enabling the participant node to participate in network services using network resources”.
Applicant’s Specification, para 91 recites “… The participant node 20 may participate in the blockchain system 200 in the decentralized network 10 via participant decentralizing functional module 110 installed by the bootstrapping server 120 of the decentralizing functional unit 100”.
However, the Specification is silent how “the participant node” is enabled to participate in network services.
29. Claims 9-10 are rejected under the same rationale as claim 8 because claims 9-10 inherit the deficiencies of claim 8 due to their dependency.
30. The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
31. Claims 1-3 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Unclear scope
32. “An essential purpose of patent examination is to fashion claims that are precise, clear, correct, and unambiguous. Only in this way can uncertainties of claim scope be removed, as much as possible, during the administrative process.” Zletz, 893 F.2d at 322, 13 USPQ2d at 1322.
33. Claim 1 recites “at least one processor… and configured to: …; create a participant transaction; …”. Claim 2, however, recites, “wherein the participant transaction is created… by the decentralization function module”. Therefore, it is not clear whether the creating of the “participant transaction” is performed by the “at least one processor” or “the decentralization function module”.
34. It is important that a person of ordinary skill in the art be able to interpret the metes and bounds of the claims so as to understand how to avoid infringement of the patent that ultimately issues from the application being examined. MPEP 2173.02 (I-III).
35. Claims 2-3 are rejected under the same rationale as claim 1 because claims 2-3 inherit the deficiencies of claim 1 due to their dependency.
Claim Rejections - 35 USC § 102
36. In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
37. The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
38. Claims 1-2 and 8-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US20200234257A1 to Mallik et al.
39. As per claim 1:
Mallik et al. discloses the following limitations:
a transceiver (Fig.1, item 106; [0017])
a memory (Fig.1, item 106; [0017]) in which a decentralization function module (“an application program” [0017]) is installed
at least one processor operably connected to at least one of the transceiver and the memory (Fig.1, item 106; [0017])
participate in network services using network resources ([0018]-[0019], [0022])
create a participant transaction ([0022], [0024])
provide the participant transaction to a blockchain front end (Fig.3, item 306; [0018], [0039]) constituting a blockchain system (Fig.1, item 110) using the decentralization function module ([0017], [0021]-[0023])
wherein the participant transaction is a transaction related to at least one function of a blockchain wallet, management, and payment ([0017], [0019], [0021]), and the network resources are at least one of a network resource of a communication operator and a shared network resource of a decentralized network ([0024], [0027]-[0030])
40. As per claims 2 and 9:
Mallik et al. discloses the following limitations:
wherein the participant transaction is created by the decentralization function module ([0017], [0028])
41. As per claim 8:
Mallik et al. discloses the following limitations:
enabling the participant node to participate in network services using network resources ([0018]-[0019], [0022]-[0027])
creating participant transactions ([0022], [0024])
providing the participant transactions to blockchain front ends (Fig.3, item 306; [0018], [0039]) constituting a blockchain system (Fig.1, item 110) a decentralization function module ([0021]-[0023])
wherein the participant transactions are transactions related to at least one function of a blockchain wallet, management, and payment ([0017], [0019], [0021, [0024]-[0030]])
wherein the network resources are at least one of a network resource of a communication operator and a shared network resource of a decentralized network ([0024]-[0030])
Claim Rejections - 35 USC § 103
42. The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
43. The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
44. Claims 3 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over US20200234257A1 to Mallik et al. in view of US20200213100A1 to Zhang et al.
45. As per claims 3 and 10:
Mallik et al. discloses the following limitations:
through the blockchain wallet of the decentralization function module ([0017])
access the blockchain system ([0022], [0026])
generate blockchain transactions ([0022], [0028])
check node status of the blockchain system ([0019], [0024], [0028], [0030], [0036], [0039], [0040])
Mallik et al. does not disclose, however, Zhang et al., as shown, discloses the following limitations:
create blockchain accounts (Fig.2, items S201, S202; [0092]-[0094])
manage created accounts (Fig.2, item S203; [0089], [0096])
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate a method for generating account information of the management account and acquiring account information of a blockchain account of the user corresponding to the identity information in a blockchain of Zhang et al. (‘100, [0007]-[0008]) with teaching of Mallik et al. for propagating survival of cryptographic currency over a predetermined period of time in a blockchain through the use of smart contracts wherein a user utilize a blockchain wallet for transactions conducted using cryptographic currency (‘257, [0005]) to enabling the user to manage the blockchain account according to the management account, creating a blockchain account in the blockchain for the user, and managing the blockchain account via the blockchain identity parser (‘100, [0089], [0094], [0096]).
Conclusion
46. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US20190188657A1 – Arora et al. – Discloses a method for guaranteeing a blockchain transaction via an alternative payment network, wherein the blockchain transaction includes transfer of the blockchain currency amount from a blockchain wallet.
US20170046664A1 – Haldenby et al. – Discloses an apparatus for generating secured blockchain-based ledger structures that facilitate event-based control of tracked assets, wherein apparatus associated with a centralized authority of the secured blockchain-based ledger may detect an occurrence of an event.
US20210233068A1 – Watanabe et al. – Discloses a system, wherein a service provider device transmits a template information transaction including a template of a transaction to a network of a blockchain and a user device transmits a payment information transaction including a payment amount.
US20210176077A1 – Zhang – Discloses a method for validating a transaction, wherein a received request to validate a transaction is executed in accordance with one or more validation rules in a plurality of validation rules.
47. THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
48. Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMANULLA ABDULLAEV whose telephone number is (571)272-4367. The examiner can normally be reached Monday-Friday 9:30AM -4:30PM ET.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Calvin L Hewitt II can be reached at 571-272-6709. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AMANULLA ABDULLAEV/Examiner, Art Unit 3692
/ARUNAVA CHAKRAVARTI/Primary Examiner, Art Unit 3692